Does anyone remember the kiddie card game SNAP!? Perhaps not if you’re a digital native – maybe it was just an 80’s thing!
Well all of this nostalgia got me to thinking about a recent trade mark opposition from Lacoste against Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna (phew!), we’ll just refer to them as the Applicant to save space, for their application to register KAJMAN as a logo in the shape of a crocodile. Perhaps not a SNAP! But surely similar?
Here’s what the earlier 2004 Lacoste Community Trade Mark looks like…
…and here’s the KAJMAN mark, which was applied for on 1st February 2007 for purses, handbags, leather goods, footwear, and clothing (amongst other things):
The Lacoste mark, funnily enough, was also registered for things like purses, handbags, leather goods, footwear and clothing (to name but a few goods).
I’m sure you’d agree that the goods for which Lacoste’s croc is registered and the goods which came under the KAJMAN application are extremely similar!
What happened next?
Not wanting to roll over on this one, Lacoste wrestled with the Applicant and opposed the KAJMAN application with full biting force in May 2008 on the basis that:
- the co-existence of the two marks would be confusing to the general public, in that one mark may be confused with the other (Article 8(1)(b) of Regulation No 207/2009 for all you law geeks out there); and
- allowing the KAJMAN mark to be registered would create an unfair advantage and could potentially cause detriment to Lacoste’s reputation (Article (8)(5) of Regulation No 207/2009).
What did the powers that be have to say about this SNAP! happy fight? Surprisingly the Opposition Division rejected Lacoste’s opposition saying the marks were visually and phonetically different, that they had low conceptual similarity and Lacoste’s mark wasn’t overly distinctive in nature. It was therefore decided that no likelihood of confusion existed.
It was also noted that Lacoste did not provide enough evidence to support its point on the KAJMAN mark taking unfair advantage of the earlier registered mark, therefore damaging the reputation of the Lacoste brand.
Now, I know what you’re thinking, yes, they are extremely similar, and yes of course Lacoste should appeal this decision…
Lo and behold! Lacoste did exactly that in December 2010.
The Board of Appeal partly upheld Lacoste’s appeal saying a likelihood of confusion existed in relation to leather goods, purses, bags, footwear and clothing. Hurrah, at long last, the Board of Appeal had seen sense! Or perhaps not…
The Board of Appeal went on to dismiss Lacoste’s view, agreeing with the Opposition Division, that allowing KAJMAN to be registered would create an unfair advantage and potentially cause damage to Lacoste’s brand. So only half of the battle was won!
On the 30th September this year, after further Lacoste and KAJMAN snipes, the General Court said that there was a likelihood of confusion between Lacoste’s croc and KAJMAN in relation to those goods listed above. They based their decision on the following factors:
- the signs were conceptually similar;
- the Lacoste mark had acquired a highly distinctive character for leather goods (class 18), clothing and footwear (class 25) through use (finally the Court is in agreement!); and
- there was a likelihood of confusion that the public would believe that the goods had come from the same organisation, or were at least linked, with regards to classes 18 and 25.
The Court did however note that there was low visual similarity between the marks aside from the fact both represented a crocodile. Similarly, the marks were not held to be phonetically similar.
What does this tell us?
Despite the lack of any real visual similarity between the marks, Lacoste had built up a significant reputation with regards to goods such as leather bags, and as such had acquired a distinctive character for these, but as always EVIDENCE OF USE IS KING!
The marks were also conceptually similar, based primarily on the fact they were both representations of a crocodile.
The FTL verdict
So reputation through use can ultimately be key, just ensure you keep this evidence stored for a rainy day and don’t fall foul of Lacoste’s initial error by not producing enough evidence in support of any oppositions!
For more information on trade marks, see my last post “Hey! Hands off my IP (Trade Marks)” here.
HUGE thanks go to Laura Rose for her help researching this case and to Issy Bennett for her creative input!